Ex Parte Honma et al

Board of Patent Appeals and Interferences

Feb 9, 2007

10631858 (B.P.A.I. Feb. 9, 2007)

The opinion in support of the decision being entered today was not written for
publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte KAZUNARI HONMA and SHIGEHARU MATSUSHITA
____________

Appeal No. 2006-3405
Application No. 10/631,858
____________

ON BRIEF
____________

Before BLANKENSHIP, MACDONALD, and HOMERE, Administrative Patent
Judges.
BLANKENSHIP, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the examiner=s
final rejection of claims 1 and 4-10.
We reverse.
Appeal No. 2006-3405
Application No. 10/631,858

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BACKGROUND
The invention relates to a dielectric device in which constituent elements in
an electrode surface layer that abuts a dielectric film are terminated by halogen
(fluorine) atoms. According to appellants, the arrangement provides for superior
characteristics with respect to dielectric devices in the prior art. Claim 1, the sole
independent claim on appeal, is reproduced below.
1. A dielectric device comprising:

such a first electrode layer that constituent elements located on its
surface are terminated by halogen atoms; and

a dielectric film formed on the surface of said first electrode layer
terminated by said halogen atoms,

wherein said first electrode layer contains at least one element selected
from a group consisting of Pt, Ir, Pd and Ru and said halogen atoms are
fluorine atoms.
The examiner relies on the following references:
Fukaya et al. (Fukaya) US 4,581,099 Apr. 8, 1986

Yamazaki et al. (Yamazaki) US 6,046,469 Apr. 4, 2000

Kirlin et al. (Kirlin) US 6,320,213 B1 Nov. 20, 2001

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Application No. 10/631,858

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Hwang et al. (Hwang) US 6,323,132 B1 Nov. 27, 2001

Nakamura US 6,783,998 B2 Aug. 31, 2004

Furukawa1 JP 11-068057 Mar. 9, 1999

1 With English language abstract and computer-generated English translation
of entire document.
We refer to the Final Rejection (mailed Jun. 13, 2005) and the Examiner’s
Answer (mailed May 9, 2006) for a statement of the examiner’s position and to the
(substitute) Brief (filed Aug. 10, 2006) and the Reply Brief (filed Jul. 7, 2006) for
appellants’ position with respect to the claims which stand rejected.
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Application No. 10/631,858

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Claims 1, 4-7, and 8 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Nakamura and Fukaya.2
Claim 7 stands rejected under 35 U.S.C. § 103 as being unpatentable over
Nakamura, Fukaya, and Furukawa.
Claim 9 stands rejected under 35 U.S.C. § 103 as being unpatentable over
Nakamura, Fukaya, and Yamazaki.
Claim 10 stands rejected under 35 U.S.C. § 103 as being unpatentable over
Nakamura, Fukaya, Yamazaki, and Kirlin.3
Claims 2 and 3 have been canceled. Claims 11-21 have been withdrawn
from consideration.

2 The Answer (at 3) contends that canceled claims 2 and 3 are also rejected.
3 Yamazaki perhaps has been applied against claim 10 but, contrary to the
indication at page 5 (part 5) of the Answer, the rejection against base claim 1 does
not rely on Yamazaki.
Appeal No. 2006-3405
Application No. 10/631,858

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OPINION
In the rejection of instant claim 1 over Nakamura and Fukaya, the examiner
finds that Nakamura shows (e.g., col. 4, ll. 36-67 and Fig. 1(a)) most aspects of the
invention, but does not “explicitly” show the first electrode surface terminated by
the fluorine atoms. The rejection turns to Fukaya (col. 4, l. 64 - col. 5, l. 2), and
finds that the reference teaches that etching with halogen atoms, such as fluorine,
terminates the material being etched. It would have been obvious, according to the
rejection, to terminate the surface of the first electrode of Nakamura since Fukaya
teaches that etching with halogen atoms, such as fluorine, terminates the material
being etched. (Answer at 3-4.)
Appellants argue that while Fukaya discloses an electrode exposed to
fluorine, Fukaya fails to teach or suggest that the electrode contains at least one
element selected from the group consisting of Pt, Ir, Pd, and Ru that is terminated
by fluorine. We find that Fukaya teaches, in the section relied upon in the
rejection, termination of dangling bonds by halogen atoms such as fluorine
remaining on the surface of “a-Si photoconductive layer” during plasma etching.
We do not find a response to appellants’ argument in the Answer.
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Application No. 10/631,858

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Appellants also argue that in the examples described in Nakamura to
implement patterning (col. 4, ll. 42-48), the surface of the “first electrode layer” as
claimed -- or the upper surface of layer 1 as shown in Figure 1(a) of the reference -
- would not be exposed during the patterning and thus would not be terminated by
fluorine atoms.
The examiner responds that Nakamura leaves the choice of patterning up to
one of ordinary skill in the art, and that two of three ways that Nakamura describes
for patterning can be done with exposure of the upper surface to the etchant. The
examiner refers to Hwang4, which describes removing a mask during etching of a
platinum electrode layer at column 6, lines 26 to 32, and to Fukaya, which teaches
removing a photoresist layer (i.e., a mask) before etching at column 3, lines 42 to
48. According to the examiner, either way that is taught by Hwang or Fukaya
would expose the surface of the layers to the etchants. (Answer at 6.)
We agree with appellants, for substantially the reasons expressed in the
briefs, that the rejection fails to establish a prima facie case of obviousness with

4 Cf. In re Hoch, 428 F.2d 1341, 1342 n.3, 166 USPQ 406, 407 n.3 (CCPA
1970) (“Where a reference is relied on to support a rejection, whether or not in a
minor capacity, there would appear to be no excuse for not positively including the
reference in the statement of rejection.”).
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Application No. 10/631,858

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respect to the subject matter of claim 1. Even assuming that the processes
identified in Hwang and Fukaya, if applied to Nakamura, would expose the upper
surface layer of the electrode to gases during etching steps in Nakamura, the
rejection does not show why the references would have suggested that the artisan
apply the requisite teachings of Hwang or Fukaya to Nakamura.
Moreover, Nakamura teaches the avoidance of a particular problem in the
prior art; i.e., the problem that when using a mask 23 for forming an electrode by
carrying out patterning with etching (sputtering), burrs 22a are formed on both
sides of the mask and on outer surfaces of metal layer 22. Nakamura col. 1, l. 46 -
col. 2, l. 10; Figs. 2(a) - 2(c). Nakamura describes processes whereby dry-etching
may be carried out such that no burrs are formed on the sides of a mask or the side
walls of the resulting electrode (e.g., col. 6, ll. 27-40; col. 7, ll. 43-46, col. 10, ll.
37-51; claim 1, wherein “no formation of side walls occurs.”). Consistent with
appellants’ position, we find no suggestion for the artisan to investigate ways in
which masks might be avoided for the etching of the layers shown in Figure 1(a),
when Nakamura describes (1) the use of masks during prior art etching steps and
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Application No. 10/631,858

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(2) how to avoid the drawbacks known to be associated with the use of masks
during the etching process.
Thus, while the rejection at best shows that Nakamura could be modified in
accordance with the requirements of instant claim 1, the rejection fails to show
why the prior art would have suggested that the artisan do so. Prior art references
in combination do not make an invention obvious unless something in the prior art
would suggest the advantage to be derived from combining their teachings. In re
Sernaker, 702 F.2d 989, 995-96, 217 USPQ 1, 6-7 (Fed. Cir. 1983). Here, the
rejection seems based on assumptions of what might happen if certain events were
to occur.
The remainder of the references applied in combination against the claims
depending from claim 1 do not remedy the deficiencies in the rejection applied
against the independent claim. We thus do not sustain the rejection of any of the
claims on appeal.
Appeal No. 2006-3405
Application No. 10/631,858

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CONCLUSION
The rejection of claims 1 and 4-10 under 35 U.S.C. § 103 is reversed.

REVERSED

HOWARD B. BLANKENSHIP )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
ALLEN R. MACDONALD ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEAN R. HOMERE )
Administrative Patent Judge )
Appeal No. 2006-3405
Application No. 10/631,858

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